Indian IP Office Undertakes to Restore Abandoned Trademark Applications

In the case of Intellectual Property Attorneys Association (IPAA) & Anr. vs the Controller General of Patents, Designs & Trademarks & Anr. [WP(C) – IPD 21/2023], the respondent, Controller General of Patents, Designs, and Trademarks (CGPDTM), undertook to restore the abandoned trademark applications to their original status within ten days.

In a bid to curtail the backlog of thousands of pending trademark applications where certain deadlines were not met, the Office of the CGPDTM released a series of notices informing to abandon such pending applications. The notice published on February 6, 2023, requested the Applicants to submit the proof of responses filed within thirty days, after which the Applications were to be abandoned. This endeavour to expedite the disposal of nearly 1,90,000 pending and opposed applications paralleled a similar attempt by the Intellectual Property Office in 2016. However, the previous attempt was thwarted by the Delhi High Court by the issue of a stay order on the mass abandonment of trademark applications.

The CGPDTM issued two abandonment orders on March 27, 2023, in continuance of the orders passed on February 06, 2023. And despite several Applicants making submissions before the Registry within the stipulated time, more than 1,60,000 trademark applications were abandoned. The abandonment drive caused a lot of chaos and panic for the Applicants as their rights were threatened.

Subsequently, the Intellectual Property Attorneys Association (IPAA) filed a writ petition before the Delhi High Court challenging the alleged arbitrary move because the abandonment orders were bad in law and contrary to the precedent set forth in 2016. Furthermore, several opposed applications had been abandoned by IP Office because the counterstatement was not submitted, which undermines the fact that IP Office had served the aforementioned counterstatements on the Opponents. IPAA also challenged the validity of notices issued by the Office, stating that the same were not issued as per the provisions of Section 132 of the Trade Marks Act, 1999.

After the respondent submitted that it would withdraw the impugned notices and restore the abandoned applications to their original status within ten days, the Delhi High Court expressed its appreciation for the respondent’s undertaking and disposed of the writ petition vide order dated April 13, 2023.